New rules on address for service for IP rights from 1 January 2021

The UK Intellectual Property Office (IPO) published business guidance on 23 November 2020, following the publication of the response to its consultation in July 2020 on removing the reference to the European Economic Area (EEA) in the address for service rules.

Following the consultation, from 1 January 2021, subject to the relevant implementing legislation[1], only an address for service in the UK (including the Isle of Man), Gibraltar or the Channel Islands will be accepted for new applications and new requests to start contentious proceedings (including oppositions, revocations and invalidity actions) before the UK IPO. Addresses outside the UK can no longer be used. This change will apply across all the registered IP rights (patents, trade marks and designs).
 
There will, however, be transitional provisions in the new rules allowing parties to continue using an EEA address in relation to applications or actions pending at the UKIPO at the end of the Transition Period (31 December 2020) and, for a limited three year period, for actions relating to new UK 'comparable rights' (see below).

Key points for businesses are:
 

• New UK applications, oppositions or cancellations filed at the UK IPO after 1 January 2021 will usually require a UK address for service. This includes new UK applications which claim priority from existing EU applications and are filed in the 9 months from 1 January 2021.
• There is no immediate need to update the address for service on existing applications or proceedings which are pending before the UK IPO prior to 1 January 2021.
• There is no need for a UK address for service when renewing and maintaining registered UK rights, including registrations granted automatically after Brexit.

What is an address for service?

When you file an application at the UK IPO for a patent, trade mark or design, it is necessary to include an address for service. An address for service is an address used to correspond with the UK IPO and can be the applicant's address, or the address of an attorney or representative, without which, the UK IPO cannot process the matter. Before the end of the Transition Period, this address must be within the UK (including the Isle of Man), European Economic Area (EEA), or the Channel Islands. Similar rules also apply for other proceedings before the UK IPO.

New applications from 1 January 2021

From 1 January 2021, when filing an application for a patent, trade mark or design, it will be necessary to provide an address in the UK (including the Isle of Man), Gibraltar or the Channel Islands, but it will not be permitted to provide an address in the EEA. This will include new UK trade mark filings based on pending EU Trade Mark (EUTM) applications in the nine-month period from the end of the Transition Period (comparable UKTM applications).

Comparable trade marks and re-registered designs

The UK IPO is creating over 2 million UK national rights which are based on EU rights. EU trade marks and Registered Community designs (RCDs) which are registered at the end of the Transition Period will then be transferred to the UK IPO's register and converted into a separate registered national right. These rights are going to be known as 'comparable trade marks' and 're-registered designs' (collectively 'comparable rights'). If you own a comparable right, then you will not be required to provide a UK address for service (unless you want to) in relation to these converted rights for a three year grace period from 1 January 2021. The current EUIPO addresses for services will be carried across and changes will not need to be made for three years.

From 1 January 2024, the UK IPO will require a UK, Gibraltar or Channel Islands address for any contentious proceedings (including opposition, invalidation or rectification) relating to those comparable rights.

Take note that the three year period referred to above does not apply to comparable trade marks created from international trade marks, nor to re-registered designs created from international designs designating the EU.  

EUTM and RCD applications that are still pending at the end of the Transition Period will not be automatically ‘cloned’ onto the UK register. However, the holders of those rights (or their representatives) will be given a nine-month period in which to claim priority from the pending EU right against a new UK filing. Any such comparable UKTM applications will need a UK address for service in the same way as other new UK filings.

Challenging/defending rights
 

• If you have a pending trade mark application (filed before 1 January 2021), you will be allowed to keep any address for service in the EEA that you have provided, but if that right is opposed after 1 January 2021, you must then provide an address for service in the UK, Gibraltar or the Channel Islands, unless the opposition is based on a 'comparable right'.
• If you are the party opposing a pending trade mark application after 1 January 2021, you must provide an address for service in the UK, Gibraltar or the Channel Islands, unless the opposition is based on a 'comparable right'. 
• If you have a registered trade mark/design or granted patent which is subject to revocation and/or invalidity proceedings initiated on or after 1 January 2021 and the address previously used for any correspondence is outside the UK, the IPO will require you to provide an address in the UK, Gibraltar or the Channel Islands in order to engage in the proceedings, unless the challenge is based on a 'comparable right'.
• If you are initiating registered trade mark/design revocation/invalidity proceedings after 1 January 2021, you must provide an address for service in the UK, Gibraltar or the Channel Islands, unless the challenge is based on a 'comparable right'.
• If you are challenging a granted patent, you must provide an address for service in the UK, Gibraltar or Channel Islands.

Proceedings that were ongoing before 1 January 2021

Any party involved in ongoing proceedings started before 1 January 2021 (such as oppositions, invalidations or revocations), which has already provided an address for service in the EEA, will not need to change that address for service. However, if that party does need or want to change the address during proceedings, it will be able to change it to another EEA address or an address in the UK, Gibraltar or the Channel Islands, for the purpose of those proceedings.

European Patents

Granted European patents designating the UK are transferred onto the UK register automatically with the applicant's details only and no validation is required. The UK IPO must have authorisation (Form 51 – appointment of change of agent) before it can recognise any representative. This will not change.

From 1 January 2021, if you wish to appoint a representative, they will need to have an address in the UK, Gibraltar or the Channel Islands. If you have already provided an address of a UK representative who acted for you in the European Patent Office, the UK IPO will still need further authorisation to confirm that the representative is acting for you in the UK.    
 
Updating the register

There are various processes which do not require a valid address for service, the most significant of which is renewal. Actions which will not require a UK address are renewing a registration, surrendering it, adding details of a third party licence agreement, changing your address if you are a rights holder or correcting an error/omission on the register.  Therefore, if you have a registered trade mark or design and wish to update the register in relation to any of these processes, you will not need to file a new UK address.

In relation to granted patents, you will not need to provide a new UK address to renew it but you will for all other actions relating to the granted patent.

Comment

The response to the UK IPO's consultation was overwhelmingly in favour of removing the reference to the EEA in the address for service rules. The general consensus was that the proposal would provide more of a level playing field for the UK and allow for more streamlined case handling at the UK IPO by skilled specialists with particular expertise in UK law and practices, resulting in a better service for clients.

If you would like any further advice on these new rules, then please do not hesitate to get in touch with the relevant contacts in the IP team.